In most cases, this box should remain unchecked.
On the National Association of Patent Practitioners' forums, there is no shortage of horror stories (even from seasoned patent attorneys) who have checked this box on the ADS and wound up having their filed patent applications and other documents ignored by the U.S.P.T.O., and having to pay a surcharge.
The text of the statute appears to allow an already-filed application to serve as the specification and drawings of the presently filed application, but the apparent drawback is whatever other papers are submitted to the USPTO are ignored. The text of the relevant statute is listed below:
§ 1.57 Incorporation by reference.(a) Subject to the conditions and requirements of this paragraph, a reference made in the English language in an application data sheet in accordance with § 1.76 upon the filing of an application under 35 U.S.C. 111(a) to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a) for purposes of a filing date under § 1.53(b).
On the National Association of Patent Practitioners' forums, there is no shortage of horror stories (even from seasoned patent attorneys) who have checked this box on the ADS and wound up having their filed patent applications and other documents ignored by the U.S.P.T.O., and having to pay a surcharge.
The text of the statute appears to allow an already-filed application to serve as the specification and drawings of the presently filed application, but the apparent drawback is whatever other papers are submitted to the USPTO are ignored. The text of the relevant statute is listed below:
§ 1.57 Incorporation by reference.(a) Subject to the conditions and requirements of this paragraph, a reference made in the English language in an application data sheet in accordance with § 1.76 upon the filing of an application under 35 U.S.C. 111(a) to a previously filed application, indicating that the specification and any drawings of the application under 35 U.S.C. 111(a) are replaced by the reference to the previously filed application, and specifying the previously filed application by application number, filing date, and the intellectual property authority or country in which the previously filed application was filed, shall constitute the specification and any drawings of the application under 35 U.S.C. 111(a) for purposes of a filing date under § 1.53(b).
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